Resistance to the Approval of an European Union Trading Mark

The European Union Intellectual Property Office (EUIPO) offers a process known as opposition, which allows a third party to challenge a trade mark application based on earlier rights. This procedure takes place before the EUIPO and can be initiated within three months following the publication of a trade mark application.

When a notice of opposition is served, the proceedings automatically enter a two-month cooling-off period, which can be extended for an additional 22 months with the consent of both parties. During this period, no further actions can be taken.

Following the expiry of the cooling-off period, the opponent has two months to file its 'Statement of Grounds'. The evidence for earlier use should demonstrate how the goods or services have been advertised under the trade mark, preferably with examples of sales records showing the mark in use. The information provided in the witness statement should relate to the grounds for opposition, such as double identity, likelihood of confusion, unauthorized filing by an agent, non-registered earlier rights, reputation, designations of origin, and geographical indications.

After the opponent's Statement of Grounds has been filed, the applicant then has two months to file its response. The EUIPO does not conduct hearings in opposition matters, and evidence is normally given in the form of a witness statement. The opposition decision is usually issued around three to six months from the close of proceedings.

If the opposition decision does not affect a particular member state, the right of conversion may be available. The opponent will then be given two months to file observations in reply. The EUIPO has discretion to grant further evidence rounds after the opponent's further observations.

Assuming the opposition proceeds to a final decision in 'normal' circumstances, the proceedings before the EUIPO take around seven to 10 months to get to an initial decision. The decision is only taken on the basis of the papers as filed. If the decision is contested, it is open to appeal to the Boards of Appeal of the EUIPO within two months from the date of notification of the contested decision.

A more detailed 'statement of grounds' must also be filed within four months from the date of notification of the contested decision. International registrations designated to the EU have an opposition period between the first month and the fourth month following the date of first republication.

Specific information about companies or individuals who applied to use the contested trademark within the last five years in the European Union can be obtained from the EUIPO database or relevant trademark registers. It's essential to ensure that all evidence for earlier use is comprehensive and clearly demonstrates the place, time, extent, and nature of use of the opposing trade mark, as well as the financial turnover from sales of the goods or services under the trade mark.